The John Marshall Journal
of Computer & Information Law
Volume 14,
Issue 2
Patent Reexamination and the PTO: Compton's Patent Invalidated
at the Commissioner's Request Terri Suzette Hughes
14 J. Marshall J. Computer & Info. L. 379 (1996)
The Patent and Trademark Office (PTO) has the authority, delegated by Congress, to accept and examine patent applications and to issue patents. Once the PTO issues a patent, there exists a presumption of validity with regards to that patent. However, this presumption of validity does not apply to patents undergoing reexamination where the PTO "construe[s] the claims of an expired patent undergoing reexamination in such a way to render claims valid if possible." Reexamination is usually requested by third parties.
In 1993, the PTO issued '671 patent for a multimedia search system to fourteen inventors who had previously assigned all their patent rights of the claimed invention to Encyclopedia, owner of publishing rights to Compton's NewMedia Encyclopedia (Compton's) the basis of this multimedia encyclopedia. After '671 patent was issued, Compton announced that it intended to enforce the '671 patent and to collect royalties and licensing fees from multimedia developers who use the multimedia search system in the '671 patent. These multimedia developers merely complained and did not take further action of requesting reexamination. The Commissioner of Patents and Trademarks, Bruce Lehman, himself, requested reexamination of the '671 patent. Subsequently, the '671 patent's forty-one claims were canceled as the result of the Commissioner's reexamination. There are many problems to such a procedure. The Commissioner appears to have accepted the complaining multimedia developers' views; thus, the result of the reexamination may have been a biased ruling against the enforceability of '671 patent. Although PTO examiners must be unbiased when reexamining a patent, the Commissioner's request for reexamination may have influenced the PTO examiners in believing that the '671 patent already had validity problems. The factual background of the Compton crisis is discussed. The PTO's procedure of reexamination and conclusion is analyzed. The author's assertions that such procedure was inappropriate are set forth.
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